Packaging 22, LLC

Trademark Trial and Appeal Board

May 10, 2016

No. 86212977 (T.T.A.B. May. 10, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: May 10, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Packaging 22, LLC
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Serial No. 86212977
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William J. Kolegraff, Esq.
for Packaging 22, LLC.
Khanh M. Le, Trademark Examining Attorney, Law Office 116,
Christine Cooper, Managing Attorney.
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Before Quinn, Adlin and Lynch,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:
Packaging 22, LLC (“Applicant”) seeks registration on the Principal Register of
the proposed mark DIGITAL BOOTH (in standard characters) for “metal phone
booths” in International Class 6.1

1 Application Serial No. 86212977, filed March 6, 2014 under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b), based on its allegation of a bona fide intention to use the mark in
commerce.
Application Serial No. 86212977

2

The Trademark Examining Attorney refused registration under Section 2(e)(1) of
the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that Applicant’s mark,
when applied to Applicant’s goods, is merely descriptive thereof.
When the refusal was made final, Applicant appealed. Applicant and the
Examining Attorney filed briefs.
We affirm.
The Examining Attorney maintains that the proposed mark is merely descriptive
of a feature and intended use of the goods. More specifically, the Examining Attorney
contends that DIGITAL BOOTH describes booths that will feature digital computer
technology in providing voice over IP (“VoIP”) telephone services. The Examining
Attorney introduced dictionary definitions of the word “digital” and “VoIP,” and
excerpts of third-party websites. The Examining Attorney, in the appeal brief, also
relies on a definition of “booth,” of which we take judicial notice. 2
Applicant argues that the mark is only suggestive, stating that “there is nothing
digital about a metal phone booth,” and that it requires several intellectual steps and
mature thought to articulate how the booths might be used. (4 TTABVUE 7).
Applicant goes on to contend that the Examining Attorney “has to stretch long and
hard to make the rejection, somehow linking ‘digital’ to ‘phone calls’ and then to
‘transmission’ and finally finding that descriptive of how the booth might ultimately
be used.” Id. The only link between the mark and the goods, Applicant asserts, is that

2 The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v.
J.C. Gourmet Food Imps. Co., 213 USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or have
regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
Application Serial No. 86212977

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the booth may incorporate electronic equipment that operates with communication
devices that use a digital format. Applicant also argues that its mark is incongruous:
Here the mark “Digital Booth” has a strong incongruity.
“Booth” is something tangible, physical, and of low
technology. “Digital” denotes modern, high tech, and
something ephemeral. Something that is a “booth” is [sic]
cannot be “digital.” And something “digital” cannot be a
physical “booth.” Read together, the mark “digital booth”
is nonsensical and means nothing unless mature
reasoning and thought is used.

(4 TTABVUE 8-9). Applicant, in its brief, relies upon a dictionary definition of
“digital,” of which we take judicial notice.
A term is merely descriptive of goods within the meaning of Section 2(e)(1) if it
forthwith conveys an immediate idea of an ingredient, quality, characteristic, feature,
function, purpose or use of the goods. In re Chamber of Commerce of the U.S., 675
F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012). See also In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009 (Fed. Cir. 1987). Whether a mark is merely descriptive is
determined in relation to the goods for which registration is sought and the context
in which the term is used, not in the abstract or on the basis of guesswork. In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle,
66 USPQ2d 1222, 1224 (TTAB 2002). A term need not immediately convey an idea of
each and every specific feature of the goods in order to be considered merely
descriptive; it is enough if it describes one significant attribute, function or property
of them. See In re Gyulay, 3 USPQ2d at 1010; In re H.U.D.D.L.E., 216 USPQ 358
(TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973). This requires
consideration of the context in which the mark is used or intended to be used in
Application Serial No. 86212977

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connection with those goods, and the possible significance that the mark would have
to the average purchaser of the goods in the relevant marketplace. See In re Chamber
of Commerce of the U.S., 102 USPQ2d at 1219; In re Bayer Aktiengesellschaft, 488
F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007); In re Abcor Dev. Corp., 200 USPQ
at 218; In re Venture Lending Assocs., 226 USPQ 285 (TTAB 1985). The question is
not whether someone presented only with the mark could guess the goods listed in
the identification. Rather, the question is whether someone who knows what the
goods are will understand the mark to convey information about them. DuoProSS
Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757
(Fed. Cir. 2012), quoting In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-1317 (TTAB
2002). See also In re Patent & Trademark Services Inc., 49 USPQ2d 1537, 1539 (TTAB
1998); In re Home Builders Association of Greenville, 18 USPQ2d 1313, 1317 (TTAB
1990); In re American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
When two or more merely descriptive terms are combined, the determination of
whether the composite mark also has a merely descriptive significance turns on the
question of whether the combination of terms evokes a non-descriptive commercial
impression. If each component retains its merely descriptive significance in relation
to the services, the combination results in a composite that is itself merely
descriptive. In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1371
(Fed. Cir. 2004) (PATENTS.COM merely descriptive of computer software for
managing a database of records that could include patents, and for tracking the
status of the records by means of the Internet). See also In re Petroglyph Games, Inc.,
Application Serial No. 86212977

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91 USPQ2d 1332 (TTAB 2009) (BATTLECAM merely descriptive for computer game
software); In re Carlson, 91 USPQ2d 1198 (TTAB 2009) (URBANHOUZING merely
descriptive of real estate brokerage, real estate consultation and real estate listing
services); In re Tower Tech, Inc., 64 USPQ2d at 1318 (SMARTTOWER merely
descriptive of commercial and industrial cooling towers); In re Sun Microsystems Inc.,
59 USPQ2d 1084 (TTAB 2001) (AGENTBEANS merely descriptive of computer
programs for use in developing and deploying application programs); In re Putman
Publishing Co., 39 USPQ2d 2021 (TTAB 1996) (FOOD & BEVERAGE ONLINE
merely descriptive of news and information services in the food processing industry).
However, a mark comprising a combination of merely descriptive components is
registrable if the combination of terms creates a unitary mark with a non-descriptive
meaning, or if the composite has a bizarre or incongruous meaning as applied to the
goods. See In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968)
(SUGAR & SPICE for “bakery products”); In re Shutts, 217 USPQ 363 (TTAB 1983)
(SNO-RAKE for “a snow removal hand tool having a handle with a snow-removing
head at one end, the head being of solid uninterrupted construction without prongs”).
“If one must exercise mature thought or follow a multi-stage reasoning process in
order to determine what characteristics the term identifies, the term is suggestive
rather than merely descriptive.” In re Tennis in the Round, Inc., 199 USPQ 496, 497
(TTAB 1978). See also In re Shutts, 217 USPQ at 364-365; In re Universal Water
Systems, Inc., 209 USPQ 165, 166 (TTAB 1980).
Application Serial No. 86212977

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The word “digital” means, in relevant part, “using or characterized by computer
technology.” (www.merriam-webster.com, Office action, 6/13/14). Another definition
reads “available in electronic form; pertaining to, noting, or making use of computers
and computerized technologies, including the Internet.” (www.dictionary.com,
judicial notice in Applicant’s brief). The word “booth” is defined as “a small, often
enclosed compartment, usually accommodating only one person; a voting booth.”
(www.ahdictionary.com). The term “VoIP” is defined as follows:
Stands for “Voice Over Internet Protocol,” and is often
pronounced “voip.” VoIP is basically a telephone connection
over the Internet. The data is sent digitally, using the
Internet Protocol (IP) instead of analog telephone lines.

VoIP is also referred to as IP telephony, Internet telephony,
and digital phone.
(www.techterms.com)

In response to the Examining Attorney’s request under Trademark Rule 2.61(b),
Applicant submitted the following response and image:
REQUEST FOR INFORMATION The applicant has
attached example pictures of the expected booth
structure. EXAMINER QUESTIONS Do the goods consist
of digital telephones? No, the goods have been narrowed
to be only metal phone booths. Do the goods feature or
include digital telephones? As illustrated by the pictures,
the booth is anticipated to have a voice handset that in
cooperation with a computer touch screen will provide
voice-over-ip telephone service.

Application Serial No. 86212977

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(Response, March 16, 2015).
Also of record are excerpts of third-party websites showing a variety of booths
featuring VoIP technology for the digital transmission of telephone calls. (Office
action, 4/1/15).
The GLCyberBooth solution enables service providers to
use voice over IP (VoIP) technology to deploy long distance
telephony services easily and cost efficiently in various
locations such as in-store phone booths, call shops or
internet cafes. It combines all the benefits of a traditional
phone booth service with the affordability and portability
of VoIP technology.
(www.groupofgl.com)

If you own telephone booth(s) or Internet Cafe(s), our VoIP
solution value-add service is [the] right choice for you. With
minimum investment, our low rates and volume discount
will increase your profitablity.
(www.seawolftech.com)

Gallaudet University, the nation’s premiere school for the
deaf, turned to VoIP for its phone system, for its speech to
text implementation, for trying video phone booths around
campus, and to see whether wideband VoIP can lead to
better speech understanding.
(www.von.org)

Application Serial No. 86212977

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Callspice platform [sic] purpose is deployment of VoIP
telephone booths with the support of hospitality services.
(www.callspice.com)

Google Voice Phone Booths To Start Popping Up In
Airports, Universities
[I]t announced the launch of phone calls and Google Voice
integration into Gmail, the company disclosed that it’s
going to begin installing Google Voice telephone booths into
universities and airports.
(www.techcrunch.com)

When the terms “digital” and “booth” are combined “the mark[s] as a whole, i.e.,
the combination of the individual parts,” does not convey “any distinctive source-
identifying impression contrary to the descriptiveness of the individual parts.” In re
Oppedahl & Larson, 71 USPQ2d at 1372. To the contrary, from “the perspective of a
prospective purchaser or user” of Applicant’s goods, “because … the combination of
the terms does not result in a composite that alters the meaning of [any] of the
elements … refusal on the ground of descriptiveness is appropriate.” In re Petroglyph
Games, 91 USPQ2d at 1341. There is nothing incongruous about the proposed mark;
rather, the mark as a whole immediately describes a purpose or function of the goods,
that is, the phone booth is designed and built to house digital technology, namely a
VoIP phone. See DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 103 USPQ2d
at 1757 (SNAP SIMPLY SAFER merely descriptive for “medical devices, namely,
cannulae; medical, hypodermic, aspiration and injection needles; medical,
hypodermic, aspiration and injection syringes”); In re Associated Theatre Clubs Co.,
9 USPQ2d 1660, 1663 (TTAB 1988) (GROUP SALES BOX OFFICE is nothing more
than a combination of the two common descriptive terms most applicable to
Application Serial No. 86212977

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Applicant’s services which in combination achieve no different status but remain a
common descriptive compound expression).
The third-party websites show that phone booths now employ digital phone
technology, commonly referred to as VoIP. Applicant’s information indicates that its
booth will be used to house such technology, thus the goods are a “digital booth.” On
this record, we conclude that consumers familiar with Applicant’s goods would
immediately understand, upon seeing Applicant’s proposed mark, that the goods are
designed and built to house a digital telephone. No imagination or thought is required
by a prospective purchaser to discern that a significant purpose or feature of
Applicant’s “metal phone booths” is use with digital technology, namely VoIP.
Furthermore, Applicant’s competitors who also might offer similar goods should have
the opportunity to use the term “digital booth” or variations thereof to explain the
purpose or function of their goods. See In re Boston Beer Co. L.P., 47 USPQ2d 1914,
1920-21 (TTAB 1998), aff’d, 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999); In re
Abcor Development, 200 USPQ at 217 (“The major reasons for not protecting [merely
descriptive] marks are … to maintain freedom of the public to use the language
involved, thus avoiding the possibility of harassing infringement suits by the
registrant against others who use the mark when advertising or describing their own
products.”). The fact that an applicant may be the first and only user of a merely
descriptive designation does not justify registration if the only significance conveyed
by the term is merely descriptive. See In re Phoseon Tech., Inc., 103 USPQ2d 1822,
1826 (TTAB 2012).
Application Serial No. 86212977

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Accordingly, we find that the proposed composite mark DIGITAL BOOTH is
merely descriptive of Applicant’s “metal phone booths.”
Decision: The refusal to register is affirmed.